Technical opinions

Asking for a technical opinion can be extremely valuable

An expert’s technical opinion is very important before making any decision. In complex situations, the technical opinion is provided only after a deep analysis of the case and, often, after searching on specific databases.

A company can request a technical opinion on many different occasions.

Studio Turini provides technical opinions before filing patent, trademark or design applications. We do this in order to determine the best filing basis for the IP application, to get the chosen IP right protected. 

Turini Group also provides technical opinions to determine counterfeiting or non-counterfeiting of a good or trademark. This can help the client be successful in a lawsuit or allow the client to place a product on the market without risking legal action.

The technical opinions are essential in every conflict situation that may happen with another party or a competitor.

Studio Turini’s professionals work as Court-appointed experts (CTU) and in particular our engineer Mario Emmi is enrolled in the Lists of experts (CTU) of the Court of Florence.

The same professional works also as a Party-appointed Technical Expert (CTP), technically assisting the client during a legal case.

When a counterfeiting case occurs, the Court often orders a technical analysis to be undertaken by a skilled expert. An analysis for understanding if a patent, a trademark or a design is valid and/or is counterfeit.

For this analysis, the Court appoints a technical expert chosen from among the specialized professionals enrolled in a specific Register. The Court-appointed technical expert is an auxiliary of the Judge, while each party will nominate their own technical expert who will exchange technical information with the Court-appointed technical one.

In this context, a skilled party-technical expert, as well as an attorney at law skilled in these issues, is crucial to win the case.

The technical opinion on patents and the role of the party-appointed expert in a case

The technical opinion is a written opinion which is necessary on many occasions, such as:

  • Determining if there is an infringement and therefore, on what basis to proceed with a lawsuit
  • Determining if a patent application can be filed
  • Determining if there is a risk of a legal action by another party, for example after having received a demand letter.

These opinions, requested on a preventive basis, are very useful and can save costs relating to a lawsuit or compensation for damages, which are often very high.

Studio Turini’s professionals follow counterfeiting proceedings, in a team formed by Attorneys at law and Patent Attorneys. For this reason, they have acquired a vast       experience in special urgent procedures, which allows them to obtain an injunction proceeding for the manufacturers or for the trade or the seizure of counterfeits in a very short time.

Studio Turini prepares technical-legal opinions concerning the patentability and infringement or non-infringement in industrial property rights, copyright and competition.

Counterfeiting

The opinion on counterfeiting is well-structured and can consist of different types of analysis. If, for example, there has been and infringement, the opinion:

→ can assess if the object created by the alleged infringer has been done in a way that could infringe the patent. If it does, the legal proceeding against the infringer can be established. Further developments of the dispute could lead to evaluating the enforceability of the patent and limitation actions.

On the other hand, if one is accused of an alleged infringement of another party’s patent:

→It can determine the enforceability of the patent integrating a possible novelty search to nullify the patent;

→It can determine if the object created infringes the patent of another party and study a defense strategy.

Studio Turini’s expert technical opinion can be used “in-house” by the client or during a trial. The firm’s professionals can be appointed as Party technical experts, to assist the client on technical issues in addition to specialist IP lawyers.

The patent infringement cases deal with very technical matters – often, judges need the opinion of a skilled technical professional. For this reason, they appoint a technical expert, while the parties appoint their technical consultants who exchange information with the Court-appointed technical consultant.

Eng. Mario Emmi has acquired great experience, as both a court-appointed expert and a party-appointed expert.

IL NOSTRO GRUPPO RILASCIA PARERI TECNICI SU BREVETTI MARCHI E DESIGN

When the technical opinion on patents is necessary

The technical opinion is essential for those who:

  • are afraid to have infringed a patent or have found a similar patent to their invention and want to understand if they are at risk;
  • having received a demand letter by the owner of a patent, want to make sure they are not in an infringement situation;
  • Want to market a new product, but first of all want to be sure of not infringing any already existing patents;
  • Have been sued and need to appoint a technical expert (CTP);
  • Have identified the same or a similar patent and want to assess if they are in infringement to decide whether to send a demand letter or start a lawsuit.

Technical opinion on trademarks

The technical opinion is a written opinion which helps determine if there is an infringement. However, even before starting a lawsuit or before presenting an opposition against a trademark or, moreover, before filing the trademark application, it may be necessary to verify if a trademark can be registered.

In some cases, deciding if a trademark can be registered or not is not straightforward or immediate. This happens in particular when similar trademarks arise from a search, but also when a trademark contains a name, a symbol, a geographical name or other elements which question the granting of the trademark. 

In these cases, a technical opinion helps the client make conscious decisions. 

A technical opinion on trademarks can therefore be useful:

  • before filing for a trademark application which presents critical aspects, to evaluate the real possibilities of obtaining the registration
  • when there is a fear of copying another’s trademark or, on the contrary, when it is believed that another party is copying one’s own trademark. 

The technical opinions of Studio Turini can have an “in-house” use for the client or can be used during legal proceedings, as a professional from Studio Turini can be appointed as a party-technical expert to refer to specific technical information, in order to assist the client in addition to the attorneys at law.

When is a technical opinion on trademarks necessary?

The technical opinion on trademarks is necessary for those who:

  • Want to be sure that they have not infringed a trademark of another party;
  • Have received a demand letter from the owner of a trademark and want to make sure they are not infringing any rights;
  • Want to market a new product with a new trademark but want to be sure that  they are not infringing already existing trademarks;
  • Have been sued for trademark infringement and need to appoint a technical expert;
  • Have identified the same or a similar trademark and want to assess if they are in infringement to decide whether to send a demand letter or start a lawsuit.

The technical opinion on design and the party-appointed technical consultancies in a lawsuit

The technical opinion is a written opinion which is necessary on many occasions, for example:

  • Determining if there is an infringement and, therefore, if it is possible to proceed with a lawsuit;
  • Verifying if a design can be filed;
  • Understanding if there is a risk of a legal action by a third party, for example after having received a demand letter.

Studio Turini prepares legal-technical opinions on the registrability of a design and infringement or non-infringement opinion in IP, copyright and competition. These opinions are critical before starting to sell a product because they help to verify that there are no patents or other registrations that could prevent their sale and are essential every time one receives, or is afraid of receiving, a claim by another party.

The opinion on infringement of a design includes:

  • the assessment of the enforceability of the design;
  • the assessment of the design infringement by who produces a similar product.

The client can use Studio Turini’s technical opinions in-house or during legal proceedings. Studio Turini’s professionals can be appointed as party-technical experts in order to technically assist the client and the attorneys at law.

The cases of design infringement deal with very technical issues and often judges            need an opinion of a skilled technical expert. For this reason, judges appoint a technical expert (CTU) while the parties employ their technical experts (CTP) which will discuss with the court-appointed one (CTU). 

Mario Emmi, engineer and Patent attorney, has a longstanding experience as CTU and CTP, and he can assist the client in counterfeiting lawsuits. 

Technical opinion on Design is necessary for a legal proceeding

A technical opinion is essential for those who:

  • are afraid to have copied a design or have found a registered model or design similar to their own and want to understand if they are at risk
  • have received a demand letter by the design owner and want to make sure that they are not infringing any rights
  • want to market a new product with a new trademark but want to make sure they are not infringing any already existing designs
  • have been sued for design infringement and need a technical expert
  • have identified the same or similar design and want to assess if they are in infringement in order to decide whether to send a demand letter or start a lawsuit.

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    We are equipped with a specialized software for the management of patents, design, trademark, copyright's portfolios" Battista Software Project" - Studio Brevetti Turini s.r.l. Project co-financed under Tuscany POR FESR 2014-2020

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